Lawyer UDRP mistakes file… — From the

Don’t forget to prove earlier rights if you claim them.

Publisher Hidden Values has lost a dispute over the domain name TriangleKidsDirectory.com.

Hidden Values publishes the Kids’ Directory. It also has a registered trademark for KID’S DIRECTORY.

It’s an admittedly weak mark. It’s even a concurrent use registration that is limited in geographic scope.

But, the registrant of the domain name was a former licensee of Kids Directory and published the directory in the North Carolina “triangle”. And he didn’t respond to the dispute. So the odds were tipped in Hidden Values’ favor.

Regardless of what you think of the merits of this case and if UDRP is the proper venue for it, the case seems to have come down to when Hidden Values got trademark rights in “Kid’s Directory”. And this is where the firm screwed up.

Hidden Values’ complaint mentions that it started using the mark in 1990. That’s the first-use-in-commerce date on its trademark application. But the trademark application wasn’t filed until 2005, following the respondent registered the TriangleKidsDirectory.com domain name. It ought to have been easy for the lawyer to show some common law rights previous to 2005 that would have been acceptable to the panel, but he dropped the ball:

“In the instant proceeding, Complainant has provided no documentary or other evidence to support the date of first use in Commerce referenced in its trademark application. This Panel therefore finds there to be a lack of evidentiary basis by which it might reasonably conclude that Complainant held rights in the KID’S DIRECTORY trademark prior to the May 12, 1995 [sic] date on which Respondent registered the disputed domain name.”

Had the firm’s lawyer provided what ought to have been easy proof, I bet the firm wins this case.